Hidden Value: The digital IP you didn’t realise you have

By Authors, Christopher Hartland and Jack Livsey

Today every business is a digital business.

Even businesses that describe themselves differently (as being a retail or manufacturing business, for example) will have a significant digital element that is, no doubt, essential to that business.

These digital elements will have hidden value, value that will never realise its financial and commercial worth if it remains hidden, ignored and/or unprotected. Instead, this hidden value needs to be captured and leveraged in the same way as all the other IP at the heart of your business.

WHAT DIGITAL IP MIGHT YOU HAVE?

Let’s look at the three primary registrable IP rights, patents, designs, and trade marks in turn.

When it comes to protecting digital inventions, patents are probably the first IP right that comes to mind. However, isn’t it just too difficult to patent software?

Well, it is difficult if not impossible to use patents to protect known algorithms or systems applied to new scenarios, the automation of known processes and data itself.

However, software can be protected if you can show your software-based invention has a technical effect, as the patent offices like to say. Unfortunately, for most of us, this phrase doesn’t mean much. Here is one of the ways we try to think about the technical effect criterion:

Is the improvement given by your invention:

• Measurable
• Repeatable
• Objective

Once you have identified the part of you invention that meets these three criteria, then you can ask yourself if that remaining part of your invention is obvious or not.

If it seems that even part of your invention meets these requirements, your software could well be patentable.

Even if it isn’t patentable, you may be able to protect your digital innovations using trade secrets.

Trade secrets are all too often the forgotten IP right. While many businesses still think they don’t have any trade secrets, the truth is, if your business has information that is kept secret, has commercial value (now or in the future) and has access to those secrets limited to need-to-know people within your business you have trade secrets.

If your digital IP isn’t patentable, trade secrets can often provide the protection you want because they can protect multiple facets of your technology, such as: how the particular piece of tech works, a formula, a practice, a process, processed data, an algorithm, code or the way you use data.

Designs are also hugely important when looking at how to protect digital innovation.

For example, a retail business might develop a novel approach for visualising and browsing their products on their website. The website might be extremely intuitive, user-friendly and unique. That user interface might give an amazing user experience and might have taken a lot of effort to develop. This look, feel and functionality can be protected by designs.

Maybe you have developed your own icons and animations. Again, these can be protected by either static or even animated designs and protected in a fraction of the time and at a fraction of the cost of pursuing patent protection. This makes designs a very effective proposition in areas that innovate at a frantic pace.

Traditionally, businesses have protected their company names, logos and even mottos with trade marks. But if you are a business who has developed an app, what are your consumers or clients interacting with every day? I’ll give you a hint, they click on it every time they want to use your app. That’s right, your app icon. This is more compact than your name and might be simpler than your logo but it is that little icon that consumers start to really associate with your brand through repeated interaction.

WHAT ABOUT PROTECTING AI INVENTIONS?

AI currently sits at the centre of digital innovation. However, there are several risks you will need to navigate when it comes to protecting the data behind AI innovations. These include:

• Finding the best way to ensure you can definitely use your AI for what you want to use it for (both now and in the future);
• Proving you actually own both the data and the algorithm being used to drive the AI;
• Making sure the tech and the underlying data in your AI invention are not accessible by your competitors.

It is also important to remember serious questions surrounding the patentability of AI (and machine learning) developed innovations remain unresolved around the world.

Several ‘test case’ applications have been filed around the world listing an AI program called “DABUS” as the sole inventor. The question as to whether an AI can be listed as an inventor have largely been met with a firm “no” by courts. This has led to these applications being rejected. However, appeals are ongoing, so the situation is unlikely to be finally determined for some time yet.

So, what does this mean for protecting IP relating to the use of AI/ML, either in the development process of non-AI related inventions, or in inventions relating to improved AI/ML techniques?

While listing an AI as an inventor for a patent application does not appear to be a good idea (at least for the moment), this does not mean that IP relating to AI/ML cannot be protected.

However, care must be taken to ensure that protection can be obtained for the key innovations relating to this subject and we’d suggest you follow these three tips if you want to develop an effective strategy for protecting IP relating to AI/ML innovations:

• Don’t be put off and act quickly!
• Confirm where the invention is
• Balance the potential for using patents vs. trade secrets

The complexity around patenting AI inventions and the developments we are seeing in our every-day practice are probably topics for an entirely separate blog post, so I will wrap this one up here.

This post scratches the surface of how to identify the hidden value in your businesses. Since this is such a complex area, we’d also suggest you speak to us if you are planning to protect any type of digital innovation. Together, we will identify the best way to maximise the commercial value of your hidden digital IP.

If you find this post interesting, join us at our upcoming event:

https://www.pro-manchester.co.uk/event/digital-tech-when-is-it-a-worthwhile-investment/

If you are unable to attend the event but you would still like to discuss your hidden digital IP, please contact the co-author, Jack Livsey ([email protected]).